Intellectual Property Teaching Kit IP Advanced Part I

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1 Intellectual Property Teaching Kit IP Advanced Part I Patents, utility models and designs Utility models

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3 IP Advanced Part I Utility models Part of the IP Teaching Kit

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5 Table of contents Content Slide Page Introduction 4 About IP Advanced Part I 5 IP Advanced Part I 1 6 PATENTS 1 Patents 9 Slides Patent case study 85 Slides Patent exercises 115 Slides UTILITY MODELS 4 Utility models 177 Slides DESIGNS 5 Designs 231 Slides Design case study 285 Slides Design exercise 325 Slides Terms of use 370 Imprint 371 EPO/OHIM Intellectual Property Teaching Kit IP Advanced Part I I 3

6 Introduction Intellectual property (IP) reaches into everyone's daily lives. A basic awareness and understanding of IP is therefore essential for today s university students, who are the engineers, researchers, lawyers, politicians, and managers of tomorrow. It is vital that students become acquainted with elementary aspects of IP, so that they can benefit from it fully in whatever career they eventually pursue. Students and universities should be aware too of how they can utilise the incomparable wealth of technical and commercial information to be found in IP documentation, and understand the need for universities to convert their research into IP rights, manage their IP portfolios and engage in technology transfer to industrial partners for value creation and the benefit of society as a whole. Last but not least, students and universities should be aware of the consequences of failing to protect IP assets correctly, including the risk of reverse engineering, blatant copying and even industrial espionage. This is where the IP Teaching Kit (IPTK) comes in. Produced by the European Patent Office (EPO) in co-operation with the European Union Intellectual Property Office (EUIPO), the IPTK is a collection of materials including PowerPoint slides, speaking notes and background information which can be used to put together lectures and presentations on all kinds of IP, including patents, utility models, trade marks, copyright, designs and trade secrets. The materials can be tailored to the background of the students (science or engineering, business or law), their knowledge of the topic, the time available and their learning objectives. With the IPTK you have at your disposal an extensive set of freely accessible, professional teaching materials which represents one of the most comprehensive IP teaching resources in the world. 4 Intellectual Property Teaching Kit IP Advanced Part I

7 About IP Advanced Part I IP Advanced Part I is part of the IPTK. It has been designed for teachers of students with little prior knowledge of IP, in order to provide them with advanced teaching material about patents, utility models and designs. In addition to the main presentations, IP Advanced Part I contains case studies and exercises on patents and designs that demonstrate their use in the real world. IP Advanced Part I consists of ready-made PowerPoint slides with speaking notes and additional background information. The speaking notes can be read out as they stand. The background information provides additional details which will help you prepare for the more advanced questions that students might have. It is not intended for this information to be included in the lecture. For online access to the extensive IPTK collection, plus updates and further learning opportunities, go to where you will also find a tutorial for teachers and lecturers. Intellectual Property Teaching Kit IP Advanced Part I 5

8 Slide 1 IP Advanced Part I Title slide 6 Intellectual Property Teaching Kit IP Advanced Part I

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11 4 Utility models

12 178 Intellectual Property Teaching Kit IP Advanced Part I Utility models

13 Utility models List of slides Slide 80 Slide 81 Slide 82 Slide 83 Slide 84 Slide 85 Slide 86 Slide 87 Slide 88 Slide 89 Slide 90 Slide 91 Slide 92 Slide 93 Slide 94 Slide 95 Slide 96 Slide 97 Slide 98 Slide 99 Slide 100 Slide 101 Slide 102 Slide 103 Slide 104 Utility models Scope of protections of utility models compared with patents Example of a utility model (I) Example of a utility model (II) Different names for utility models and patents European countries in which utility model protection is available Utility model applications filed in Europe ( ) Scope of protection and exclusions (I) Scope of protection and exclusions (II) How to get utility model protection Important requirements for utility model applications State of the art for European patent applications State of the art for utility models State of the art for utility models: what happens in practice Prior art searches Inventive step Developing an IP strategy Comparison of costs patent and utility model applications Utility models: for and against Total filing figures for various IP rights Relative filings in 2010 by continent Top 10 offices in 2010 for utility model applications 30 years of filing history for utility model applications Recommendations and further reading Quiz Utility models Intellectual Property Teaching Kit IP Advanced Part I 179

14 Slide 80 Utility models WIPO (the World Intellectual Property Organization) defines the utility model (UM) system as follows: "Like a patent, a UM confers a set of rights for an invention for a limited period of time, during which UM holders can commercially exploit their inventions on an exclusive basis. The terms and conditions for granting UMs are different from those for "traditional" patents. For example, UMs are issued for a shorter duration (7 to 10 years) and, at most offices, applications are granted without substantive examination. Like patents, the procedures for granting UM rights are governed by the rules and regulations of national intellectual property (IP) offices, and rights are limited to the jurisdiction of the issuing authority." 180 Intellectual Property Teaching Kit IP Advanced Part I Utility models

15 This presentation is all about utility models. Utility models Intellectual Property Teaching Kit IP Advanced Part I 181

16 Slide 81 Scope of protections of utility models compared with patents Utility models have many aspects in common with patents. In contrast to other intellectual property rights (such as designs, trade marks, copyright, etc.), utility models and patents may protect the same aspects of a technical invention (e.g. the technical details of a flight simulator comprising a robotic arm). Designs and trade marks can protect other aspects, but not the technical details. A utility model is an exclusive territorial right which prohibits third parties from making selling marketing importing or using the protected subject-matter in the country in which it was registered. However, while patents offer protection for methods and processes, this is not normally the case for utility models and depends very much on the national utility model law. This is a key aspect when talking about utility models, since there is no one single "European" utility model law, but instead many different national laws. In some countries, such as the UK, it is not possible to file utility models. Students should be made aware that utility models are unexamined IP rights. That means that they are granted without substantive examination for novelty and inventive step. This is the reason why they can be registered within a matter of a few months of having been filed. It is important to point out that aspects of utility model law can differ from country to country. This is also true for national patent laws. Strictly speaking, almost every bullet point on this slide should begin with the words 'In the majority of countries', as there are numerous exceptions. For example, French patent law does not stipulate the same examination procedure as German patent law with respect to inventive step. However, rather than detailing the exceptions, we have listed the major differences between utility model law and patent law that exist in most countries. These aspects will be returned to in the slides that follow. Utility models are registered intellectual property (IP) rights. Any interested party can consult the register to find the full details of registered utility models. They are territorial rights that are valid in one country only, namely the country of the issuing authority. For example, a German utility model is only valid in Germany and does not offer protection in France or any other country. Utility model applications must be filed individually with the individual national offices. There is no equivalent of the PCT or EP/EU route for utility models, although there are possibilities for filing utility model applications based on international or national patent applications, or vice versa Utility models provide protection for technical inventions, but not normally for processes. Technical processes may be protected by patents. There may be other exceptions. For example, Germany will not register utility models for biotechnology inventions. Utility models offer protection for a maximum of three to ten years. This limitation, in combination with the quick registration process, makes utility models attractive for inventions with shorter life-cycles. Utility models do not normally involve a search report (exceptions include Austria, for example). In some countries (e.g. Germany), search reports are available on demand. Utility models are not examined IP rights with respect to novelty, inventive step and industrial applicability. In other words, they are not examined for these aspects on registration. One exception to this is Brazil (similar examination as for patent applications). In most countries, the validity of a utility model with respect to novelty and inventive step is only reviewed if it is challenged, i.e. in invalidation or infringement proceedings. Patents are granted following an examination procedure. A published (and granted) patent therefore offers more legal certainty than a registered and published utility model. The procedural fees for utility models may be lower than those for national patent applications. However, the fact that utility models are available more quickly than patents appears to be more important than potential cost savings. 182 Intellectual Property Teaching Kit IP Advanced Part I Utility models

17 This slide compares some key aspects of utility models with those of patent applications and granted patents. after 18 months. The publication of the patent application is a procedural step which takes place before the application is examined. Both patents and utility models are registered territorial rights offering protection for technical inventions. In contrast to patents, however, utility models are only available in certain countries. Also, utility models must be filed individually in each country, whereas patent applications may be filed centrally with the EPO or WIPO. Utility models offer protection for up to 10 years, while patents offer protection for 20 years The result of the patent examination procedure is either the grant of a patent or the refusal of the application. In general, utility models are registered without a substantive examination as to novelty, inventive step and industrial applicability. The novelty, inventive step and industrial applicability of utility models is only reviewed in revocation or infringement proceedings. Utility models are normally registered without a search report on the prior art, whereas such reports are standard for patent applications. Generally speaking, utility models are registered and published within a few months, while patent applications are normally published Utility models Intellectual Property Teaching Kit IP Advanced Part I 183

18 Slide 82 Example of a utility model (I) This example of a German utility model can be found in the register of the German Patent and Trademark Office (DPMA) at &CURSOR=49 At first glance, it is not easy to distinguish it from a national patent application. It is the letter 'U' that indicates that this document is a registered utility model. All utility models comprise the following components: an abstract a description claims (normally) figures. The utility model in our example protects a driving simulator that allows a normal car to be used to simulate driving. The simulator comprises a base plate and several actuators for moving the base plate. The wheels shown in the figure belong to a normal car. All other components of this car are not shown. The idea is to connect the base plate to the car via adapters. By using different adapters for different cars, the same base plate and actuators can be used for simulating the driving of a range of different cars. Since this utility model is only a few pages long, it could be that it is intended to protect one aspect of a more complex invention for which a patent application might have been filed. 184 Intellectual Property Teaching Kit IP Advanced Part I Utility models

19 This slide shows an example of a German utility model, or "Gebrauchsmuster". It looks very similar to a German patent application. It can be identified as a utility model because the publication number at (10) contains the letter "U". Unlike patent applications, the publication date of the utility model in this case 27 September 2012 is very close to the application date, 6 July This is due to the fact that utility models are registered if the formal requirements are fulfilled. No search report or subsequent examination phase is required. Utility model applications comprise an abstract, a description, claims and, normally, one or more figures. Utility models Intellectual Property Teaching Kit IP Advanced Part I 185

20 Slide 83 Example of a utility model (II) According to the German Ordinance Implementing the Utility Model Act (Utility Model Ordinance) at the description must: specify the technical field to which the invention relates indicate the prior art known to the applicant which may be considered for the understanding of the invention disclose the technical problem underlying the invention indicate the invention for which protection is sought in the claims indicate the way in which the invention is capable of exploitation in industry state any advantageous effects of the invention with reference to the prior art indicated in the application describe in detail at least one way of carrying out the invention claimed, using, where appropriate, examples and the drawings. The claims define the matter for which protection is sought in terms of the technical features of the invention. The extent of the protection conferred is determined by the terms of the claims. The essential features of the invention must be indicated in the first claim (principal claim). Drawings may be added. For the representation of the invention, perspective views and exploded views may be used in addition to views and sectional views. Further requirements for the example of German utility models can be found in the Utility Model Ordinance at Intellectual Property Teaching Kit IP Advanced Part I Utility models

21 All applications must contain a request for the grant of a utility model, a description of the invention, one or more claims, any drawings referred to in the description or claims, and an abstract. The purpose of the abstract is to give brief technical information about the disclosure as contained in the description, claims and drawings. The claims in our example relate to a simulator device. It is not possible to get utility model protection for the process of simulation in Germany, although it could be the subject of a German patent application. Utility models Intellectual Property Teaching Kit IP Advanced Part I 187

22 Slide 84 Different names for utility models and patents This slide shows the different names for utility models around the world. It is important to be aware of these differences in order to avoid confusion and misunderstanding. The terms or expressions for utility models are shown in blue, while the equivalents for European patents are shown in dark grey. In the USA regular patents are called "utility patents" and should not be confused with utility model protection (see also The Chinese expressions ("invention patent" and "utility model patent") are less confusing. For more information about the situation in Australia, go to innovation-patent 188 Intellectual Property Teaching Kit IP Advanced Part I Utility models

23 This slide shows the different names for utility models around the world. In Australia they are referred to as innovation patents, while in China they are utility model patents. In Indonesia, they are known as simple patents. Ireland has short-term patents, which have a lot in common with utility models in other states. The United States Patent and Trademark Office differentiates between design patents, plant patents and utility patents. It does not offer utility model protection. The term "utility patent" is used for a regular patent application. In Australia, innovation patents last for eight years. They are designed to protect inventions that do not meet the inventive threshold required for standard patents. They are a relatively quick and inexpensive way to obtain protection for new devices, substances, methods or processes. In the People s Republic of China, utility models are known as "utility model patents" and patents as "invention patents". Utility models Intellectual Property Teaching Kit IP Advanced Part I 189

24 Slide 85 European countries in which utility model protection is available Utility models (or short-term patents) are only available in half of the 38 member states of the European Patent Organisation (see member-states.html). Ireland and Slovenia have short-term patents rather than utility models. The Netherlands used to offer utility models (or short-term patents) prior to the amendment of the Netherlands Patent Act in According to the Slovenian Intellectual Property Office, the short-term patents available in Slovenia basically correspond to utility models like those available, for example, in Germany (see frequently-asked-questions/). Worldwide, the availability of utility models is difficult to assess because of the differences in laws and names. WIPO, for example, only publishes figures relating to its own member states (see utility_models/where.htm). According to a study conducted in 2004 by a Japanese researcher, about 130 countries have introduced the utility model system to supplement national patent law (see IIP bulletin 2004, 39). 190 Intellectual Property Teaching Kit IP Advanced Part I Utility models

25 This slide shows the European countries in which utility model protection is available. In contrast to patents, utility models known as short-term patents in Ireland and Slovenia are only available in half of the 38 member states of the European Patent Organisation (EPO). Utility models Intellectual Property Teaching Kit IP Advanced Part I 191

26 Slide 86 Utility model applications filed in Europe ( ) The filing figures for utility model applications in Europe are fairly stable. More than 50% of applications are filed in Germany, a country that has a long tradition of utility models. As we will see later, only 10% of all filings worldwide occur in Europe Albania Austria Bulgaria Czech Republic Denmark Estonia Finland France Germany Greece Hungary Italy Poland Portugal Slovakia Slovenia Spain Turkey These and many other statistics are available from the WIPO website at As you can see, the database does not have a full set of data for each country/year. 192 Intellectual Property Teaching Kit IP Advanced Part I Utility models

27 The filing statistics for the ten years from 2002 to 2012 show that utility models are used extensively in Germany, Turkey, Spain, Italy and the Czech Republic. The total number of filings has remained relatively stable. As we will see later, more than 80% of the total number of applications worldwide are filed in the People s Republic of China. Utility models Intellectual Property Teaching Kit IP Advanced Part I 193

28 Slide 87 Scope of protection and exclusions (I) Like patents, utility models offer protection for technical inventions. The exclusions from protection in utility model laws are very similar to those of the corresponding national patent laws. Individual aspects of utility model law may vary from country to country, since there is no single, harmonised European utility model law. That means that when filing the same application in several countries, applicants need to be aware of each national law in order to avoid their application being rejected. 194 Intellectual Property Teaching Kit IP Advanced Part I Utility models

29 In most countries, utility models offer protection for technical inventions, including apparatus and devices, chemical substances and medicinal products. Utility model protection is not available, however, for discoveries, scientific theories, mathematical methods, blueprints, patterns, teaching methods and rules for playing games, accounting systems and programs for computers, process inventions, for example manufacturing and working processes, biotechnological inventions or animal and plant varieties. Utility models Intellectual Property Teaching Kit IP Advanced Part I 195

30 Slide 88 Scope of protection and exclusions (II) One example of the differences in national utility model laws can be found in Austria, where 'program logic on which programs for data processing systems are based' is regarded as an invention under the Utility Model Law and can thus be protected, whereas 'computer programs as such' are excluded from protection (see at/media/pa144.pdf). As we have already seen, processes normally cannot be protected by utility models. Australia provides an exception to this rule. In Australia, innovation patents last for eight years. They are designed to protect inventions that do not meet the inventive threshold required for standard patents. It is a relatively quick and inexpensive way to obtain protection for new devices, substances, methods or processes. To read more about Australian IP law, go to innovation-patent 196 Intellectual Property Teaching Kit IP Advanced Part I Utility models

31 Utility models cannot be granted for inventions the publication or exploitation of which would be contrary to public policy or morality. The following example shows not only that differences in utility model laws exist between different countries, but also that different interpretations can exist within one utility model law. For example, under Austrian Utility Model Law, program logic on which programs for data processing systems are based is regarded as an invention, whereas computer programs as such are excluded from protection. In most countries utility models cannot protect technical processes. Australia is one exception to this. Utility models Intellectual Property Teaching Kit IP Advanced Part I 197

32 Slide 89 How to get utility model protection With patent applications we have seen that the applicant has several options for filing a single application, including the World Intellectual Property Organization (WIPO) and the European Patent Office (EPO), which may then result in a plurality of national patents. Utility models have to be filed separately in each country. Some countries also allow a utility model application based on an international patent application. Applicants may file further applications within 12 months of the first filing. The Paris Convention provides for the right of priority in the case of patents (and utility models, where they exist), marks and industrial designs. This right means that, on the basis of a regular first application filed in one of the contracting states, the applicant may, within a certain period of time (12 months for patents and utility models; 6 months for industrial designs and marks), apply for protection in any of the other contracting states. These later applications will then be regarded as if they had been filed on the same day as the first application. One of the great practical advantages of this provision is that, when applicants desire protection in several countries, they are not required to file all their applications at the same time, but instead have 12 months (in the case of utility models) at their disposal to decide in which countries they wish to seek protection and to organise the filing procedure (see also ip/paris/summary _paris.html). In 1995 a proposal for a European Parliament and Council Directive relating to the legal arrangements for the protection of inventions by utility models was made (see also model/util_en.pdf). The Commission decided to withdraw this proposal in 2005, due to objections from several member states. The Commission considered that it was unlikely to advance further in the legislative process. 198 Intellectual Property Teaching Kit IP Advanced Part I Utility models

33 Applicants wishing to file an application for a utility model in several countries, whether in Europe or elsewhere, have to file individual applications for each country concerned. They can file further applications within 12 months of the first filing. Patents, trade marks and designs can be filed centrally, but this option does not exist for utility models. In 1995 a proposal was submitted for a European Parliament and Council Directive relating to the legal arrangements for the protection of inventions by utility models. However, the Commission decided to withdraw this proposal in 2005, on the grounds that it was unlikely to advance further in the legislative process. Utility models Intellectual Property Teaching Kit IP Advanced Part I 199

34 Slide 90 Important requirements for utility model applications In Europe, the requirements of national utility model laws are often similar to those for patents under the European Patent Convention (EPC). The Austrian Utility Model Law, for example, states that "On request, utility models shall be granted for inventions in all fields of technology, provided they are new, based on an inventive step and susceptible of industrial application." Austrian law also states the following: "The utility model shall entitle the utility model owner to exclude others from industrially producing the subject matter of the invention, putting it on the market, offering it for sale or using it or importing or possessing it for the said purposes. In case of a process it shall be effective to the products directly obtained by such process." "The utility model protection shall begin on the day of the official publication of the utility model and end no later than ten years following the end of the month in which the utility model application was filed." The differentiation between substantive requirements and further requirements is based on European patent law. If all requirements of the patent law are fulfilled, then a patent may be granted for a technical invention. Novelty, inventive step and industrial applicability are often mentioned as substantive requirements of patentability. However, there are further requirements that an application has to comply with before a patent can be granted. These include sufficiency of disclosure and clarity. The examination as to whether all these requirements are met can be a lengthy procedure. In the case of utility model applications, the requirements are generally not examined, so the procedure up to registration of a utility model normally takes just a few months. It is important for students to understand this major difference. Patents are examined registered IP rights and utility models are generally unexamined registered IP rights. "However, no examination for novelty, inventive step, industrial application as well as whether the applicant is entitled to utility model protection shall be made during the application proceeding." 200 Intellectual Property Teaching Kit IP Advanced Part I Utility models

35 In Europe, the requirements of national utility model laws are often similar to those for patents under the European Patent Convention (EPC). However, novelty, inventive step and industrial applicability are not normally examined when a utility model application is registered and published. This means that an application can be directed at an invention that is neither novel nor inventive and still be granted a utility model that becomes effective on the day of its official publication. The further requirements listed on the slide are usually examined during the registration procedure. These requirements include the fact that the specification must disclose the utility model in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. The claim or claims must be clear and concise and be supported by the description, and they must exactly define the matter for which protection is sought. Amendments to a utility model application that would extend beyond the scope of the application as originally filed are not allowed. As a result, the validity of a utility model in terms of novelty, inventive step and industrial applicability is not known on the date of its registration and publication. Utility models Intellectual Property Teaching Kit IP Advanced Part I 201

36 Slide 91 State of the art for European patent applications This slide reminds students how the state of the art is defined for patent applications. The following slide, covering the definitions used for utility models, allows a direct comparison to be made. The state of the art (or prior art) is defined as being everything made available to the public by means of written or oral description, by use, or in any other way, before the date of filing. Students might like to consider what the consequences might be if 'prior art' were to be defined differently in different countries. 202 Intellectual Property Teaching Kit IP Advanced Part I Utility models

37 This slide explains what is meant by the state of the art for European patent applications. The state of the art is defined as being everything made available to the public anywhere by means of written or oral description, by use, or in any other way, before the date of filing. Most countries offering utility model protection apply this definition in order to determine whether an invention is new. Utility models Intellectual Property Teaching Kit IP Advanced Part I 203

38 Slide 92 State of the art for utility models There are differences in the definition of the state of the art for utility models from country to country. These exceptions open up new possibilities for applicants wishing to register utility models. If they want to file an application in several countries, applicants need to be aware of the national variations. This slide explains the exceptions in Austria and Germany (see also _models/utility _ model_protection/index.html). In Germany, the following is not considered to belong to the state of the art for utility models: prior use outside Germany public oral disclosure applicant's own use or publication in the previous six months. At this point, you might like to ask students to come up with possible scenarios in which the absolute novelty criterion for patents would lead to a different state of the art than the less strict relative criterion of novelty for utility models. An example is shown on the next slide. 204 Intellectual Property Teaching Kit IP Advanced Part I Utility models

39 Utility model law in European countries is not harmonised with respect to the definition of prior art. In Germany and Austria, for example, the state of the art comprises all technical products or processes published before the date of filing of the utility model application. This includes the applicant's own scientific publications or presentations of a new product at a fair. If you apply for utility model registration within six months from the publication of your invention, utility model protection is still available. This is called the novelty grace period. In Germany, the state of the art does not include prior use outside Germany or public oral disclosure. Utility models Intellectual Property Teaching Kit IP Advanced Part I 205

40 Slide 93 State of the art for utility models: what happens in practice The example shown on this slide is intended to illustrate the problems that may be caused by exceptions or other provisions in national utility model laws. The state of the art in Spain is deemed to comprise anything that, prior to the date of filing the application, has been disclosed in Spain, by written or oral description, by use, or in any other way. It also comprises the contents of Spanish patent applications and utility model applications, European patent applications designating Spain in respect of which the designation fee for Spain has been paid in due time, and international (PCT) patent and utility model applications designating Spain for which the national phase in Spain has been properly entered into. The Bulgarian manufacturer of the hammock might be of the opinion that prior use in his country is sufficient to prevent others from filing a utility model application in another country. However, only a written publication available in Spain would really allow him to invalidate a Spanish national utility model. Prior use in Bulgaria would not be sufficient. 206 Intellectual Property Teaching Kit IP Advanced Part I Utility models

41 There are differences in the way the state of the art is defined in different countries. This slide shows a fictitious example of a hammock which is produced and used in Bulgaria. Unless the Bulgarian manufacturer described the hammock in a printed document in Spain, Spanish tourists, for example, could apply for and still get utility model protection for it in their home country. Spanish utility model laws do not regard prior use in Bulgaria that is, outside Spain as belonging to the state of the art. If the Bulgarian manufacturer had published a document about the hammock in Germany, it could be used against a utility model in Germany. That document could not, however, be used against the utility model in Spain, since only publications in Spain are relevant. In practice, though, the widespread availability of documents through the internet means that many documents that were previously considered to be "national" have become available worldwide. Utility models Intellectual Property Teaching Kit IP Advanced Part I 207

42 Slide 94 Prior art searches The key message of this slide is that, in contrast to patent applications, the registration and publication of a utility model does not normally involve a search. That means that the public and/or the applicants are not necessarily aware of the prior art that is relevant for a registered utility model, unless they carry out their own search. As soon as a utility model is challenged, however, a search report is required in order to examine novelty and inventive step. In Germany, applicants or anybody else may choose to request a search report at any time. An example relating to the application looked at earlier in the module can be found at: DPMAregister/pat/register?AKZ= &CURS OR=49 The Austrian Utility Model Law stipulates the following: "If there are no objections against the publication and the registration of the utility model, the Patent Office will provide the search report, which will indicate the documents determined by the Patent Office at the time the search report is provided that can be taken into account to assess novelty and inventive step." It goes on to stipulate that the search report must be based on the claims. 208 Intellectual Property Teaching Kit IP Advanced Part I Utility models

43 Before filing a utility model application, applicants should be aware of the relevant prior art. They can find out about this by searching public databases such as Espacenet and DepatisNET. Prior art searches are not normally offered by national patent offices. Austria is an exception to this, and in Germany, applicants are free to choose whether they want the German Patent and Trademark Office to produce a search report or not. In fact, in Germany, anybody can request a search. After registration, a search for prior art documents might be necessary as part of revocation proceedings, where another party seeks to invalidate a utility model, or infringement proceedings, where a court examines the validity of a utility model within the context of an alleged infringement. Utility models Intellectual Property Teaching Kit IP Advanced Part I 209

44 Slide 95 Inventive step Potential differences between the notion of inventive step for patents and inventive step (or inventiveness) for utility models add even more complexity. The question of inventive step is, however, not immediately relevant for utility models since utility models are not normally examined for inventive step at the time of registration and publication. The inventive step may be examined, however, if a utility model is the subject of: revocation proceedings (when another party seeks to invalidate a utility model) infringement proceedings (when a court examines the validity of a utility model within the context of an alleged infringement). Different practices with respect to inventive step can potentially lead to different outcomes in different national litigation proceedings. Australia In Australia, innovation patents last for eight years. They are designed to protect inventions that do not meet the inventive threshold required for standard patents. It is a relatively quick and inexpensive way to obtain protection for a new device, substance, method or process (see also: patents/types-of-patents/innovation-patent/). In some countries, the differences between the inventive step requirements for patents and utility models have been discussed by the most important courts in the country, e.g. in the Demonstrationsschrank ("demonstration cupboard") decision of the Federal Supreme Court (File No. X ZB 27/05) of 20 June 2006 in Germany, which brought the requirements for inventive step for patents and utility models more closely into line in that country. Here are some examples of differences between patent law and utility model law. Ireland In Ireland, the specification of a short-term patent (utility model) application may not include more than five claims. The requirements of novelty and industrial applicability apply, but instead of non-obviousness, it is sufficient for the invention to be "not clearly lacking an inventive step". Neither a search report nor evidence of novelty in the form of a foreign patent specification is required in order for registration of a short-term patent. 210 Intellectual Property Teaching Kit IP Advanced Part I Utility models

45 In some countries, including Ireland and Australia, for example, there is a difference between the requirements for inventive step for utility models and those for patents. Applicants may want to seek protection of the same invention by both a patent for up to 20 years and a utility model, for fast availability of initial protection. Some sources highlight the difference by referring to "inventive step" for patent applications and "inventiveness" or "innovative step" for utility models, although the two expressions can often be used interchangeably. The conditions governing the coexistence of patents and utility models for the same invention depends on national law. The potential difference for the inventive step requirement is, however, only one argument in favour of utility models. Utility models Intellectual Property Teaching Kit IP Advanced Part I 211

46 Slide 96 Developing an IP strategy This slide looks at the various strategic possibilities that utility models offer to applicants. Depending on the national law concerned, applications can be filed at various stages. Applicants can choose to register a utility model as strategic IP tool, together with applications for patents and other IP rights. In some countries it is possible to file a national utility model from a pending European patent application. In Germany and Austria, for example, applicants who become aware of a potential infringement may, subject to obtaining a translation of the patent application into German, obtain a utility model in a matter of weeks based on a pending European patent application. The German Utility Model Law provides for a split-off utility model from an existing patent application (see also the German Patent and Trademark Office's brochure on utility models, _models). Before the expiry of 10 years from the filing date, a utility model may be split off from a patent application for the same invention. The utility model application must be filed (together with the splitting-off declaration) within two months after the conclusion of the examination of the patent application (see also service/glossary/s_z/index.html). In China, utility models cannot be converted into invention patents. However, dual filing of applications for invention patents and utility models is possible in order to obtain early protection. Upon notification of the grant of the patent, the utility model must be abandoned (see In China, only one patent can be granted for the same invention. However, where the same applicant applies for a utility model patent and an invention patent for the same invention on the same day, if the utility model patent acquired earlier has not yet been terminated and the applicant waives his rights, the invention patent will be granted (see Patent Law of the People's Republic of China, Article 9 and lawsregulations/201101/t _ html). 212 Intellectual Property Teaching Kit IP Advanced Part I Utility models

47 Depending on the national law concerned, applications for utility models can filed at various stages. Applicants can also choose to file an application for a utility model without a patent application for the same or a similar invention. A utility model based on a patent application may be filed on the same day, or later. In some countries it is possible to split off a national utility model from a pending European patent application, or to convert the utility model application into a patent application. Together with other IP rights such as designs and trade marks, this gives applicants and inventors a wide range of strategic flexibility. Utility models Intellectual Property Teaching Kit IP Advanced Part I 213

48 Slide 97 Comparison of costs patent and utility model applications The lower costs for utility models are often mentioned as an advantage for small and medium-sized enterprises. However, when analysed over a period of several years, the total costs might not be substantially different from those for national patents and patent applications. In this slide, it has been assumed that: the attorney fees are similar for both types of applications a patent is granted after around 4-5 years the time axis is not linear The fee structure for the two procedures differs in that: for patents/patent applications the applicant/ proprietor pays annual renewal fees for utility models the applicant/proprietor pays fees for several years in advance. The main advantage of utility models is their early registration (three months after filing) compared with several years for patents. Reminder: Utility models are registered, but unexamined. Their validity with respect to novelty and inventive step is therefore unknown. From a cost perspective, the differences between utility models and patents appear to be less relevant. A major difference lies in the frequency and number of payments. Once a patent has been granted, renewal fees have to be paid annually. With utility models, the applicant has to pay in advance to cover several years. As the total costs might not be all that different after several years, it is the strategic value for the inventor that is more relevant. Granted patents are based on a thorough examination process, while utility models offer fast, but unexamined protection. 214 Intellectual Property Teaching Kit IP Advanced Part I Utility models

49 This slide compares fees for a utility model application with those for a realistic example of a national patent application. The total fees might not be all that different when we look at a period of several years. It is the strategic value for the inventor that is more relevant. Utility models Intellectual Property Teaching Kit IP Advanced Part I 215

50 Slide 98 Utility models: for and against The strategic potential of utility models is unique within the category of registered IP rights. On the one hand a utility model offers protection for technical inventions, like a patent. On the other hand it is an unexamined registered IP right, like registered trade marks and designs. You could ask your students to discuss the advantages of these two aspects. Patents offer protection for technical inventions but the search and examination phases preceding the grant of a patent or the refusal of an application may last several years. For some inventions this time period might be too long, and that's where utility models might be particularly useful. An inventor can file a patent application and in parallel get protection for his invention after a few months via a registered utility model (where available). Remind the students that the central filing of one application for several countries is not possible. 216 Intellectual Property Teaching Kit IP Advanced Part I Utility models

51 Utility model applications can be filed when needed at different times in different countries depending on national utility model law and the strategic preferences of the inventor. Although procedural fees may be lower than for national patent applications, applicants are advised to consult a professional for drafting utility model applications. The requirements for utility model applications are similar to those of patent applications and the procedure of filing and prosecuting applications requires professional experience. It is very important to remember that utility models are registered but unexamined IP rights. Registration takes place within a few months. The inventor may thus have an IP right at hand when going to market with a new product. The examination for novelty and inventive step is postponed as long as the utility model is not challenged in litigation. This causes more legal uncertainty than with granted patents. Utility model revocation proceedings may be expensive if the losing party has to bear the costs, including those incurred by the opponent. Utility models Intellectual Property Teaching Kit IP Advanced Part I 217

52 Slide 99 Total filing figures for various IP rights The figures on this slide were obtained from the WIPO IP Facts and Figures 2012 report. Utility models Trade marks Patents Industrial designs They reveal that: utility models are used less than the other three registered IP rights utility models have the strongest growth (especially in China see next slides) trade marks are by far the most frequently used IP right. 218 Intellectual Property Teaching Kit IP Advanced Part I Utility models

53 The filing figures for utility models, patents, trade marks and industrial designs in the period 2008 to 2010 reveal that, although they are used less than the other three IP rights, utility models have recorded the highest growth rate. These figures were obtained from WIPO's IP Facts and Figures 2012 report. Utility models Intellectual Property Teaching Kit IP Advanced Part I 219

54 Slide 100 Relative filings in 2010 by continent The figures on this slide were published in the WIPO IP Facts and Figure 2012 report. Utility models Trade marks Patents Industrial designs Oceania North America Latin America Europe Asia Africa Utility models statistically play a role in just two continents: Asia and Europe. The percentage for Africa is 0.02 %, only just above zero. Utility models are not known in North America, which is why there is no entry in this column. 220 Intellectual Property Teaching Kit IP Advanced Part I Utility models

55 The 2010 figures for IP rights filings by continent also from WIPO's IP Facts and Figures 2012 report reveal that utility models are primarily used in Asia. When we look at utility models, indicated by the grey bars, we can see that just over 88% are filed in Asia and around 10% in Europe, leaving less than 1% in the rest of the world. The chart on this slide compares percentages of total filings, not absolute figures. The bars in each colour add up to 100%. Utility models are unknown in North America. Utility models Intellectual Property Teaching Kit IP Advanced Part I 221

56 Slide 101 Top 10 offices in 2012 for utility model applications The figures on this slide were sourced from the WIPO Statistics Database in June China Germany Russian Federation Republic of Korea Ukraine Japan 8112 Turkey 3788 Brazil 2997 Italy 2758 Spain 2539 Czech Republic 1863 This table shows the top offices with respect to total filing numbers for utility models in Interestingly, Brazil is listed as number 8 worldwide, while Latin America as a continent is statistically speaking virtually irrelevant in the worldwide comparison of total utility model filing numbers (see previous slide). China is top of the list in terms of the total number of filings. 222 Intellectual Property Teaching Kit IP Advanced Part I Utility models

57 This chart shows that, in 2012, almost 90% of all utility model filings worldwide occurred in the People s Republic of China, which has seen an enormous increase over recent years. This information was sourced from the WIPO Statistics Database in June Utility models Intellectual Property Teaching Kit IP Advanced Part I 223

58 Slide years of filing history for utility model applications The figures on this slide were obtained from the WIPO Statistics Database. Illustrating 30 years of filing history, the graph very clearly shows that the countries with the highest filing numbers are located in Asia and Europe. At first glance, the presence of continents (Europe) and individual countries (e.g. China and Japan) might give the impression that the graph is comparing apples and oranges. The intention, however, is to show that as far back as 1982, more than 80% of filings were made in Asia (2012: 92%), and 20% in Europe (2012: 6.3%). A comparison by continent would hide the fact that the majority of utility model applications filed in Asia in the 1980s occurred in Japan, and in 2012 in China. The changes in Asia are due to a number of reasons. The reinstitution of the patent system in China in 1985 introduced the concept of invention, utility model and design patents. Filing figures for utility model patents (as well as for invention patent applications) have risen steadily since then. The 1987 amendment of the Patent Law in Japan allowed multiple claims for patent applications and resulted in a significant shift in filings from utility models to patents. In 1993 Japan amended its Utility Model System and abandoned substantive examination of utility models at the time of registration. Another significant shift of filings from utility models to patents was the result. In Europe filings fell from around in 1982 to fewer than in 1990, before rising again above in These developments have not been analysed. More information can be found on the WIPO website at China Europe Japan Republic of Korea Russian Federation Ukraine China Europe Japan Republic of Korea Russian Federation Ukraine China Europe Japan Republic of Korea Russian Federation Ukraine Intellectual Property Teaching Kit IP Advanced Part I Utility models

59 Looking at this graph, we can see that filing figures in Japan and China have changed dramatically over the last 30 years. 30 years ago utility models were mainly filed in Japan and Europe, with, as of 1985, a few thousand in China. By 2012 the situation was very different in Asia, with filings in China and in Japan, while in Europe the figure was very similar to what it had been in In 1993 Japan amended the Utility Model System and abandoned the examination of utility models at the time of registration. The result was a further significant shift from utility models to patents. In 1985 the reinstitution of the patent system in China introduced invention, utility model and design patents. Filing numbers for utility models (as well as for patent applications) have increased steadily since then. There are a number of reasons for these developments in Asia. In 1987 the Japanese Patent Law was amended to allow multiple claims for patent applications. This resulted in a significant shift from utility models to patents. Utility models Intellectual Property Teaching Kit IP Advanced Part I 225

60 Slide 103 Recommendations and further reading Anyone thinking of drafting and/or filing a utility model application should consult a professional first. It is only too easy to overlook, say, a technical detail when drafting an application, and it is normally not possible to correct such errors after the application has been filed. For more information see the following websites: World Intellectual Property Organization ( Country profiles ( Directory of Intellectual Property Offices ( The patent offices of the EPO member states ( member-states.html) The websites of other national IP offices 226 Intellectual Property Teaching Kit IP Advanced Part I Utility models

61 Anyone considering filing a utility model application should consult a professional first. More information can be found on the websites shown here. Utility models Intellectual Property Teaching Kit IP Advanced Part I 227

62 Slide 104 Quiz 1. Name three differences between patents and utility models. Answer: Utility models are normally unexamined registered IP rights (exception: Brazil) and patents normally registered examined IP rights (exception: France). The duration of protection for patents is 20 years compared with a maximum of 10 years for utility models. Patent applications may be filed centrally with WIPO and the EPO. 2. Are utility models available in: all European states? (Answer: No) all EPO member states? (Answer: No) all EU member states? (Answer: No) 3 (a). What is the difference between "relative" and "absolute" novelty? Answer: Absolute novelty means that any prior art worldwide is used for the assessment of the validity of the patent or the utility model. Relative novelty means that prior art in the country of application is relevant, but not prior art from other countries. 3(b). Some countries only assess relative novelty when examining the validity of a utility model. What are the consequences of this assessment? Answer: A utility model may still be filed in one country for an invention that was already in use in another country before the date of filing of the utility model. 4. Are inventions in published utility models novel and inventive? Answer: It depends. The answer to this question is often only investigated during litigation, in other words after the utility model concerned has been published. 5. Is the inventive step/inventiveness criterion always the same for utility models and patents in any one country? Answer: It depends on national law and current practice. 6. Can a utility model offer protection for: a simulation process? (Answer: Normally not; depends on national law) a simulator? (Answer: Yes) 228 Intellectual Property Teaching Kit IP Advanced Part I Utility models

63 Utility models Intellectual Property Teaching Kit IP Advanced Part I 229